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i-online software ag v. Magnolia Associates [2001] GENDND 1001 (22 May 2001)

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Complainant is "i-online software ag," whose address is Riemergasse 14, A-1010 Vienna, Austria. Complainant’s authorised representative in this case is Meinhard Ciresa, Attorney at law, Biberstrasse 3/8, A1010 Vienna, Austria.

Respondent is Magnolia Associates, 12 Daleside, Gerrards Cross, Bucks SL9 7JF, United Kingdom. Its contact is indicated in the Complaint as Mr. Tony Walker, with the same address. (Mr. Walker´s functions in relation to Respondent are discussed further below under Parties´ Contentions).

The domain name at issue is <i-online.com>. The Registrar is Network Solutions, Inc., Herndon, Virginia, United States.

The World Intellectual Property Organization Arbitration and Mediation Center (the Center) received a Complaint from Complainant by e-mail on March 24, 2001, and in hard-copy form on March 29, 2001. The Center acknowledged receipt of the Complaint on March 27, 2001.

Having verified that the Complaint complied with the formal requirements, the Center issued, on April 2, 2001, a Notification of Complaint and Commencement of Administrative Proceeding, which was notified to Respondent and to Complainant as well as to the Registrar and to ICANN.

Having issued a request for Registrar Verification, the Center received a Verification Response on March 30, 2001. According to that Response:

- Network Solutions is in receipt of the Complaint sent to it by Complainant.

- Network Solutions is the Registrar of the domain name at issue.

- The Registrant is, according to Registrar´s WHOIS database, Magnolia Associates, 12 Daleside, Gerrards Cross, Bucks SL9 7JF, United Kingdom.

- Administrative Contact, Technical Contact is: NETCOM Internet Ltd., Hostmaster, St James´ House, Oldbury, Bracknell, Berkshire RG12 8TH, United Kingdom.

- Billing Contact is: NETCOM Internet Ltd., InterNIC Billing, with the same address as indicated above.

- The Network Solutions Service Agreement Version 5.0 is in effect, and

- The domain name registration is in active status.

On April 3, 2001, the Center received a communication in e-mail form from Respondent (Mr. Walker; see below), of which the Center acknowledged receipt on May 1, 2001. No further communications were received from any of the Parties from the date of the e-mail until the appointment of the Panel.

The Center invited, on May 17, 2001, Mr. Henry Olsson to serve as Sole Panelist and received, on May 18, 2001, Mr. Olsson´s Statement of Acceptance and Declaration of Impartiality. The same day the Center appointed Mr. Olsson as Sole Panelist and issued a Notification of Appointment of Administrative Panel and Projected Decision Date, which was duly communicated to the Parties. The Projected Decision Date was June 1, 2001.

The Sole Panelist considers that the Administrative Panel was properly constituted and appointed in accordance with the Rules and the WIPO Supplemental Rules.

Complainant is a public limited company under the laws of Austria, registered in the Commercial Registry of Vienna under number FN 125044p. Complainant has submitted a copy of an extract from "Firmenbuchdatenbank" showing data about this registration.

Respondent´s activities are dealt with below under Response.

In accordance with Paragraph 3(b)(xiii) of the Rules, Complainant agrees to submit, only with respect to any challenge that may be made by Respondent to a decision by the Administrative Panel to transfer or cancel the domain name that is the subject of the Complaint, to the jurisdiction of the courts of the location of the principal office of the concerned Registrar.

First, Complainant states that the registration agreement pursuant to which the domain name at issue is registered incorporates the Policy and that Respondent is, in accordance with Paragraph 4(a) of the Policy, required to submit to a mandatory administrative proceeding because:

- the domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights,

- Respondent has no rights or legitimate interests in respect of the domain name, and

- The domain name was registered and is being in bad faith.

In support of its contentions, Complainant has submitted, first, inter alia, that the Complaint is based on the Austrian trademark registration No AT 188 782, for the mark "I-ONLINE" and also on Complainant´s company name. The trademark registration applies, according to the documentation submitted by Complainant, to classes "09, 35, 38, 41 and 42" which includes classes 09 for hardware and software, 38 for Internet and Internet application services, and 42 for maintenance of computer software. The application for registration was, according to the documentation submitted, filed on February 22, 2000, and registration effected May 25, 2000. The trademark is, according to Complainant, also used in those classes.

Complainant contends that the domain name <i-online.com> is identical to Complainant’s registered trademark. According to Complainant, furthermore, Respondent has no rights or legitimate interests in this domain name because it has no trademark registration and it does not use this domain name at the moment and has not used it within the last couple of years. <i-online.com> has been registered in bad faith because there is no indication that the owner will use it. If <i-online.com> is called, the text: "Host name lookup for ‘www.i-online.com’failed" appears on the screen. Complainant has submitted a copy of that text. Complainant states that it has monitored the website for a couple of months and there is no indication that Respondent intends to engage in a bona fide use offering of goods or services.

Complainant furthermore contends that the domain name could only have been registered primarily for the purpose of disrupting the business of a competitor, because combinations of a single letter together with "online," like "i-online," are very common and are heavily used by Internet service providers or software companies. It seems, according to Complainant, that Respondent is related to an Internet service provider and software company which recently changed its name from "Magnolia IT Services Ltd" to "1st-interactive design Ltd".

For the reasons now described, Complainant requests that, in accordance with Paragraph 4(b)(i) of the Policy, the Administrative Panel issue a decision that the contested domain name be transferred to Complainant.

As mentioned above, the Center received, on April 3, 2001, a communication in e-mail form from Mr. Tony Walker commenting on the contentions of Complainant. No Response in hard-copy form was submitted.

The e-mail states that "Magnolia Associates" is a consultancy firm that has been working with another company for the last two years developing a range of on-line e-commerce packages. The name was changed to "Magnolia IT Services Ltd," but this name was in turn changed to "1st Interactive" and Magnolia IT Services was returned to Magnolia Services. As part of the agreement concluded in that context, Mr. Walker left "www.magnolia.co.uk" with a re-direct to "1st Interactive" as the registration with search engines has value to "1st Interactive."

As part of his new activities, Mr. Walker set up a company in May 1998, which specialised in providing on-line services to small and medium-sized enterprises (SMEs). At the beginning, such services were offered directly by his company to such enterprises, but it was realised that a better way would be to offer such services via third parties, in particular through Internet Service Providers (ISPs). This was the reason why the domain name <i-online.com> was not used. In May 1999, as part of a further agreement, the rights in that domain name were assigned to a third party along with the company "i-Online Services Ltd" which is properly registered at Companies House in the United Kingdom.

Mr. Walker furthermore states that his company is not an ISP, but an application service developer: his ISP, Nildram, charges him for holding domain names. In 1999, Nildram was instructed to transfer the domain name to the new owner. According to Mr. Walker, a simple check showed that this had been done and he thought no more about the matter.

Mr. Walker states that domain names in the .com, .net and .org domains can be registered with many competing Registrars. Thus, according to the e-mail, the domain name <i-online.com> is registered with Network Solutions and the holder of that domain name is, according to the Whois listing, NETCOM, a large ISP in the United Kingdom. Mr. Walker´s own domain name <magnolia.co.uk> is registered for Magnolia Associates by NILDRAM, which is also the ISP used.

The Magnolia web re-direct has not been removed as Mr. Walker´s company now uses a web address which is more suited to its own on-line business. The <magnolia.co.uk> is, however, still used as the e-mail address for any residual work related to Magnolia Associates and for the holiday letting business of Mr. Walker´s wife.

Mr. Walker does not know why the name of his previous company was not changed at the same time as the domain name at issue was reassigned, but, as his company was not being charged for it and no response had been received from the new company, he thought that everything was satisfactory and had no reason to inquire further.

Mr. Walker is concerned that the notification concerning the Complaint in this case had not been served on the rightful party due to an error by another party; he is not sure of the company´s address and, because he will be out of the country until April 18, he would request that Complainant takes reasonable step to identify the owner of the domain name before the legal actions are completed.

In the e-mail, Mr. Walker states that he never attempted to register a name "primarily for disrupting the business of a competitor." The name was ideally suited to his company´s plans at the time and he had most certainly never heard of any Austrian Company called "i-online software ag" in May 1998.

Mr. Walker furthermore states that, in his opinion, the argument that a business has no rights to a domain name because there is no trademark registration is "facile." He knows "that the owner of <i-online.com> has shared rights to the UK trade mark ‘i’ written in the form of the @ sign with the ‘a’ replaced by an ‘i’. This may be the intended trade mark." Furthermore, in his e-mail, Mr. Walker points out that monitoring a web address is hardly sufficient. He uses <magnolia.co.uk> for e-mail but not for a website address. In his opinion using a domain name for e-mail only is an entirely legal use of the domain name.

Finally, Mr. Walker states that his statements are intended to help resolve a situation that has probably not been brought about by the current owner and who may feel aggrieved should it result in loss of rights to a properly constituted company registered at Companies House. Mr. Walker stresses that his statements are, however, not intended to be interpreted as a correct defence on the other company´s behalf as he has no knowledge of what happened since May l999.

Finally, in Mr. Walker´s opinion, he has no interest in the matter (other than to help in its resolution) and he formally states that his e-mail is submitted "without prejudice."

As mentioned, this e-mail was received on April 3, 2001. From that date until the appointment of the Panel no further communications relating to this case were received neither from Mr.Walker, nor from anyone else.

Rule 15 of the Rules prescribes that the Panel shall decide a Complaint on the basis of the statements made and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.

The Service Agreement relating to the domain name registration at issue incorporates the Policy which is consequently applicable to this case.

Paragraph 4(a) of the Policy directs that Complainant must prove each of the following

- that the domain name registered by Respondent is identical or confusingly similar to a trademark or a service mark in which Complainant has rights;

- that Respondent has no rights or legitimate interests in the domain name; and

- that the domain name has been registered and is being used in bad faith.

In the following parts of this decision, the Panel discusses each of those elements and also the question of who is the right Respondent in this case.

Before going into the substance of the case, the Panel has to examine the statements made by Mr. Walker in his e-mail to the effect that the domain name at issue should in fact have been transferred to another company some time in 1999 because instructions had been given to that effect and circumstances led Mr. Walker to believe that this had also been done. The Panel has thus to consider whether Magnolia Associates is in fact the right Respondent. The Panel notes in this respect that, as regards this particular domain name registration effected by Network Solutions, the Verification Response clearly and unequivocally indicates that Magnolia Associates is the Registrant. From a formal point of view any Complaint has to be directed against the Registrant appearing in the Registrar´s records at the time of the filing of the Complaint. The Panel, therefore, must find that Magnolia Associates is the correct Registrant and thus also the correct Respondent to which the Complaint has been communicated (by courier, fax and e-mail) and against which the legal effects of this Decision are to be directed.

In this respect Complainant has, according to Paragraph 4(a)(i) of the Policy, to prove that the domain name at issue is identical or confusingly similar to a trademark or a service mark in which Complainant has rights.

The domain name at issue is <i-online.com>.

Complainant has submitted registration information showing that it is the owner of a trademark registration of the mark "I-ONLINE" in Austria. The domain name at issue and the trademark differ only in that the gTLD ".com" forms part of the domain name but not of the trademark. The trademark is registered for various kinds of computer and on-line services. In the view of the Panel, there exists a clearly confusing similarity between the trademark and the domain name at issue.

In this respect, Complainant has, according to Paragraph 4(a)(ii) of the Policy, to prove that Respondent has no rights or legitimate interests in the domain name.

Complainant has contended that Respondent has no such rights or legitimate interests because he has no trademark registration and he does not use, and has not for the last couple of years, used the domain name. In his e-mail Mr. Walker has responded, among other things, that monitoring a web address is hardly sufficient to prove absence of rights or interests, as a domain name can be used only as an e-mail address and not necessarily be connected to a website.

The Panel is aware that it is often difficult for a Complainant to prove that a Respondent has no rights or legitimate interests in a domain name. The circumstances invoked by Complainant in this case certainly point in the direction that Respondent would in fact have no rights or legitimate interests in the domain name at issue. In view of what has been indicated in the e-mail in question about the history of the domain name and the use made of it, the Panel can, however, not find that the circumstances present in this case are sufficient to establish that Respondent has no rights or legitimate interests in the domain name.

In this respect, Respondent has, according to Paragraph 4(a)(iii) of the Policy, to prove that the domain name has been registered and is being used in bad faith.

Complainant contends that the domain name at issue has been registered and is being used in bad faith because there is no indication that the owner will use it and also there is no indication that this will be changed to a bona fide offering of goods or services. According to Complainant, the domain name could only have been registered primarily for the purpose of disrupting the business of a competitor because combinations of single letters together with "online" (like "i-online") are very common and heavily used by Internet service providers or software companies.

In the e-mail from Mr. Walker it is indicated, among other matters, that he never attempted to register a name primarily for the purpose of disrupting the business of a competitor; according to him the name was ideally suited to his company´s plans at the time and he had most certainly not heard of any Austrian company called "i-online ag" in May 1998.

First the Panel notes that the indication "i-online" as part of a company name and as a trademark is, as far as has been established in this case, used only in Austria. It has not been suggested that that indication has been used in a domain name. It is, in fact, not very likely that a United Kingdom national and his company would have had knowledge about the Austrian trademark and company name at the time of the registration of the domain name; furthermore, the trademark registration seems to have occurred only in May 2000. The registration of the domain name at issue could well have occurred without any knowledge about such other rights, the more so as Complainant itself indicates that combinations of a letter with the word "online" are very common and heavily used in the activities in which both Respondent and Complainant are involved.

In view of what has now been said, the Panel can not find that the circumstances invoked by Complainant are sufficient to prove registration and use in bad faith.

On the basis of the foregoing, the Panel concludes that Respondent´s domain name is confusingly similar to Complainant´s trademark, that it has not been established that Respondent has no rights or legitimate interests in the domain name and that it has not been established that the domain name at issue has been registered and is being used in bad faith.

Accordingly, Complainant´s request for a transfer of the domain name at issue to Complainant shall be denied.

The Administrative Panel denies Complainant´s request for a transfer of the domain name <i-online.com> to Complainant.

Henry Olsson
Sole Panelist

Dated: May 22, 2001